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Tag Archives: orphan works

*This week is Fair Use Week, an annual celebration of the important doctrines of fair use and fair dealing. It is designed to highlight and promote the opportunities presented by fair use and fair dealing, celebrate successful stories, and explain these doctrines.

This post is brought to you by guest blogger, Jonathan Band of policybandwidth*

Over the past decade, policymakers on both sides of the Atlantic have devoted significant attention to finding ways to permit the use of orphan works: works whose copyright owners are difficult to identify or locate. Library associations in both Europe and the United States initially supported these efforts strongly. In Europe, these efforts culminated in the adoption of an Orphan Works Directive in 2012. In the United States, by contrast, legislation stalled in 2008. Although the U.S. Copyright Office continues to push for orphan works legislation, U.S. library associations no longer seek such relief. This is due to changes in the copyright legal landscape, particularly the evolving case law concerning fair use. This paper explores the different trajectories of orphan works legislation in the EU and the United States, with special emphasis on how U.S. libraries changed their position in response to legal developments on the ground.

On October 5, 2015, the twelve trade ministers of the TPP negotiating parties (Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, Vietnam and the United States) announced that they had come to an agreement on the large regional trade agreement that had been under negotiations for the past five years.

While the agreement has been criticized for a number of reasons, it is important to recognize the areas where the agreement has improved from the initial proposals made by the United States in February 2011. Civil society, technology companies and academics have participated throughout the negotiating process to improve the language of the final text and many of these efforts are reflected in the agreement.

Of course, one of the main points of criticism regarding the TPP was the lack of transparency; without the various leaks of the intellectual property chapter throughout the course of the negotiations, substantive debate, criticism and proposed alternatives may not have been possible. It is worth noting that the agreement was signed by the trade ministers of the twelve negotiating parties in Atlanta, GA without a single official release of any chapter of the TPP. Notably, when international agreements are negotiated in multilateral fora such as at the World Intellectual Property Organization (WIPO), the negotiations are much more transparent and stakeholders have the opportunity to view and substantively comment on the proposals. Even today, the final text has not been officially released, though Wikileaks has released a leaked copy of the final agreement’s intellectual property chapter.

Improvements in the Text

The final text of the TPP saw improvement in several areas, including the removal of certain provisions.

Removal of the Ban on Parallel Importation

The United States’ initial proposal included a ban on parallel importation, granting authors “the right to authorize or prohibit the importation into that Party’s territory of copies of the work, performance or phonogram made without authorization, or made outside the Party’s territory with the authorization of the author, performer, or producer of the phonogram.” This proposal would have prohibited parallel importation, limiting the application of the first sale doctrine to authorized copies made within the Party’s territory. Thus, a legitimate copy made in another country could not be sold in the United States without the author’s consent.

This proposal was controversial at the time it was introduced as other negotiating parties strongly rely on parallel importation of works. Additionally, during this time a high-profile court case, Kirtsaeng v. John Wiley & Sons, involving this very issue was making its way through the court system ultimately ending up before the Supreme Court of the United States. In that case, an individual purchased lawfully made textbooks in Thailand, where they were less expensive, and resold them in the United States.

In March 2013, the Supreme Court ruled that the first sale doctrine applies to lawful copies regardless of their place of manufacture. This ruling clarified that United States law does indeed allow for parallel importation, thus conflicting with the United States’ proposal. Despite this ruling, it took many months and several negotiating rounds for the United States to remove its language banning parallel importation. Ultimately, though, this prohibition was removed and is not in the final text of the agreement.

Removal of Language on Temporary Reproductions

Another area of controversy surrounding the United States’ proposal centered around language granting authors the right to authorize or prohibit reproductions “in any manner or form, permanent or temporary (including temporary storage in electronic form).” Many criticized the inclusion of temporary reproductions, particularly the clarification that it applied to “temporary storage in electronic form” as potentially prohibiting the temporary copies that are constantly made by a computer to read e-mails, store documents, access content, etc. Reference to “temporary reproductions” and “temporary storage in electronic form” is not in the final text, another helpful improvement in the text.

Removal of the Ban on Formalities

The October 2014 leak of the IP chapter, which reflected the state of negotiations as of May 2014, revealed that parties had agreed to new language banning formalities that did not appear in prior leaks. ARL criticized this development noting

This language could be problematic if the United States, or other TPP parties, wanted to re-introduce formalities for copyright protections granted that go beyond minimum international standards. Register of Copyrights Maria Pallante, for example, proposed the re-introduction of formalities for the last twenty years of copyright protection in the United States. If adopted, such a proposal would violate the TPP and subject the United States to investor-state dispute settlement, under which a corporation could sue the Unites States government for failure to comply with the TPP.

However, the August 2015 leak, reflecting the state of negotiations as of May 2015, as well as the final leaked text show that the text was ultimately removed. The removal of this language was a welcome improvement, preserving the ability to re-introduce formalities for protections granted under the TPP that go beyond minimum international standards set by the Berne Convention or TRIPS.

Improvements on Technological Protection Measures

The United States’ initial proposal on technological protection measures (TPMs) included detailed language, including a closed-list set of limitations and exceptions to the anti-circumvention rules. In addition to the very limited set of exceptions, the proposal would have allowed countries to use a three-year rulemaking process, modeled after the Digital Millennium Copyright Act (DMCA) 1201 rulemaking process, to create additional limitations and exceptions subject to a “substantial evidence” burden. This proposal would not have permitted new permanent limitations and exceptions to the anti-circumvention rules and was heavily criticized, particularly as certain events, such as the Register’s refusal to renew an exemption in 2012 to allow for the unlocking of cell phones, highlighted the absurdity of the process.

The 2014 leak and the final text of the agreement reveal that parties have removed the closed list of limitations and exceptions as well as the rulemaking process. Instead, the text allows parties to provide for limitations and exceptions and to use legislative, regulatory or administrative processes to create exceptions. This language would permit the creation of new permanent limitations and exceptions.

Furthermore, while the language still provides that a violation of the anti-circumvention rules “is independent of any infringement that might occur under the Party’s law on copyright and related rights,” this text could be mitigated by a helpful footnote that reads “A Party may provide that the obligations described in paragraph (ii) with respect to manufacturing, importation, and distribution apply only where such activities are undertaken for sale or rental, or where such activities prejudice the interests of the right holder of the copyright or related right.”

The fact that the United States’ initial proposal in 2011 made circumvention a “separate and independent cause of action” was controversial and makes little sense. Establishing that circumvention is independent of any copyright infringement negatively impacts legitimate, non-infringing circumvention. However, the footnote that appeared in the final text could mitigate the harm of this provision because circumvention for legitimate purposes would not prejudice the interests of the right holder.

Inclusion and Improvements on Text on Limitations and Exceptions

The United States’ initial proposal included placeholder text for limitations and exceptions on copyright. The United States tabled a proposal on limitations and exceptions in July 2012. While proposal was a welcome one, including language referencing balance for purposes such as “criticism, comment, news reporting teaching, scholarship and research” which had never been in any prior United States free trade agreement, there were also criticisms of the proposal which noted that this new paragraph was “subject to and consistent with” the three-step test. Critics pointed out that some specific limitations and exceptions, such as the quotation right under the Berne Convention, are not subject to the three-step test (that limitations and exceptions are confined to 1) certain special cases, 2) the at do not conflict with the normal exploitation of the work, and 3) do not unreasonably prejudice the legitimate interests of the right holder).

Ultimately, the language regarding limitations and exceptions was improved and clarification was included that the text on the three-step test did not reduce or extend the scope of limitations and exceptions under international agreements including TRIPS, the Berne Convention, and the WIPO Internet Treaties.

The text of the United States’ proposal also improved with respect to the fact that the list of “legitimate purposes” now specifically references “other similar purposes” as well as “access to published works for persons whoa re blind, visually impaired, or otherwise print disabled.” The text also includes a specific footnote recognizing the Marrakesh Treaty and acknowledges that some Parties facilitate the availability of accessible format works beyond the requirements of the Marrakesh Treaty.

Finally, while the language on limitations and exceptions could have been stronger with language mandating that parties achieve a balance or foster a balance, rather than the agreed to language that “Each Party shall endeavor to achieve an appropriate balance in its copyright and related rights system,” the inclusion of the language in the final text is still a success. The United States has now recognized in a free trade agreement the importance of balance in the copyright system. Furthermore, the United States has stated that this language provides “an obligation for Parties to continuously seek to achieve balance in copyright systems,” because the language requires Party to “endeavor to achieve” balance. The words “shall endeavor” do create a mandatory obligation for parties to seek this balance.

Inclusion of this language signals that the Office of the United States Trade Representative (USTR) has responded to criticisms that the United States proposals only export rights for rightholders and not our balanced system which includes limitations and exceptions. This language should be included in future trade agreements and USTR should seek to improve upon it in the future by strengthening the language requiring parties to achieve a balance or foster a balance. Despite the fact that the language could have been stronger, its inclusion in the final text still reveals a mandatory obligation for parties and represents a positive development.

Remedies Allow for Judicial Discretion

The final language regarding enforcement also shows areas where the text has improved from the United States’ initial proposal.

For example the final text includes language that replicates text from the Anti-Counterfeiting Trade Agreement (ACTA) requiring parties to take proportionality into account. The text reads, “In implementing the provisions of [the enforcement] Section in its intellectual property system, each Party shall take into account the need for proportionality between the seriousness of the intellectual property infringement, and the applicable remedies an penalties, as well as the interests of third parties.” This language on proportionality is a welcome inclusion and would ultimately allow domestic laws to provide judicial authorities discretion in ordering remedies.

Additionally, while the United States’ initial proposal in 2011would have required judges to consider certain measures of damages (“in determining damages for infringement of intellectual property rights, its judicial authorities shall consider, inter alia, the value of the infringed good or service, measured by the suggested retail price or other legitimate measure of value submitted by the right holder”) the final language provides judicial authorities the discretion to consider these measures of damages. The final text provides that “judicial authorities shall have the authority to consider . . .” and this added language “have the authority” changes the text from a mandatory obligation that judges consider these measures of damages to providing them the discretion to do so. This addition is an improvement and consistent with current United States law which permits judicial discretion.

Other provisions on the text on remedies includes similar language, providing that judicial authorities “shall have the authority” to impose certain remedies, but does not actually require that authorities order these remedies. While some have criticized the TPP as prohibiting the Copyright Office’s proposal on orphan works (which is a highly flawed proposal as analyzed here and here), the actual text of the TPP permits considerable discretion and does not actually require authorities to order damages in a particular amount.

General Provisions

As noted in ARL’s analysis of the August 2015 leak, language on general provisions reveal considerable positive developments. The final text includes language provides that the objectives of the agreement are as follows:

The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.

The principles specifically reference the public interest and address the need to prevent abuse of intellectual property by right holders:

1. Parties may, in formulating or amending their laws and regulations, adopt measures necessary to protect health and nutrition, and to promote the public interest in sectors of vital importance to their socio­economics and technological development, provided that such measures are consistent with the provisions of this Chapter.

2. Appropriate measures, provided that they are consistent with the provisions of this Chapter, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.

The final text also includes a section on “Understandings in respect of this Chapter” which reads as follows:

Having regard to the underlying public policy objectives of national systems, the Parties recognize the need to:

promote innovation and creativity;

facilitate the diffusion of information, knowledge, technology, culture and the arts; and

foster competition and open and efficient markets;

through their intellectual property systems, while respecting the principles of transparency and due process, and taking into account the interests of relevant stakeholders, including rights holders, service providers, users and the public.

The August 2015 leaked text, reflecting the negotiating text as of May 2015, also included language proposed by Chile and Canada “acknowledging the importance of preserving the public domain.” This text was, however, opposed by the United States and Japan and ultimately not included in the agreement. It is extremely unfortunate that the United States and Japan would oppose inclusion of such text.

However, in the section on “Cooperation” the text from the August 2015 leak remains in the final text recognizing the importance of the public domain:

The Parties recognize the importance of a rich and accessible public domain.

The Parties also acknowledge the importance of information materials, such as publicly accessible databases of registered intellectual property rights that assist in the identification of subject matter that has fallen into the public domain.

While it is disappointing that the United States and Japan opposed the inclusion of a reference to the public domain in the general provisions, the fact that the importance of the public domain is recognized on the section regarding cooperation is still welcome language.

Shortcomings/Areas for Improvement in Future Agreements

Flexibility on ISP Liability

The final language of the agreement does provide for some flexibilities with respect to Internet Service Providers (ISP). While the text, contained in Section I, is modeled off the DMCA and provides for safe harbors for ISPs implementing a notice-and-takedown system, an annex specifically preserves Canada’s notice-and-notice system. The annex provides that the notice-and-takedown safe harbors do not apply to a Party that has implemented a notice-and-notice system instead.

Unfortunately, this flexibility will only be permitted for Canada and not for the other negotiating parties. The language under the annex requires the system to be in place “upon date of agreement in principle of this Agreement,” which occurred when the trade ministers announced the agreement on August 5, 2015. Canada was the only country at that time to have a notice-and-notice system in place.

However, another annex to the intellectual property chapter provides that as an alternative to implementing the article on ISP, parties may instead implement Article 17.11.23 of the US-Chile free trade agreement. Chile’s system involves notice-and-takedown, but involves a judicial order before takedowns are required. Countries may therefore choose between implementing the language in the TPP or the language of the US-Chile trade agreement.

Unfortunate Extension of Copyright Term

Copyright Term Extension

One of the biggest areas of criticism that remains in the final agreement is that the parties settled on a copyright term of life plus seventy years, or seventy years for corporate works. The United States’ 2011 proposal would have set copyright term as the life of the author plus seventy years, or ninety-five (or up to one-hundred twenty years if unpublished) years for corporate works. While countries did not accept the United States’ proposals on corporate works, they did agree to the term of life plus seventy years. Some countries with pre-existing free trade agreements with the United States (Australia, Chile, Peru and Singapore) already had obligations to provide for a period of life plus seventy years and Mexico had an even longer term, which it proposed, of life of the author plus one hundred years.

However, it is highly unfortunate that the other countries ultimately agreed to extend copyright term, given the lack of justification for excessively long terms. The Hargreaves report commissioned by the United Kingdom, for example, points out that economic evidence does not support copyright term extensions. Maria Pallante, Register of Copyrights, noted that a Copyright Office study questioned “whether copyright term should be extended to benefit remote heirs or assignees, ‘long after the purpose of the protection has been achieved.’” Despite the lack of policy justification for these terms and the fact that copyright term extension damages the public domain and increases the orphan works problem, the final text of the agreement reveals that countries must provide for copyright terms that go far beyond the minimum international standards.

After the trade ministers announced an agreement had been reached, New Zealand released a fact sheet on the TPP. This fact sheet estimated that the copyright term extension would cause “significant cost” to New Zealand: “This cost – in terms of foregone savings on books, films, music and other works – increases gradually over 20 years and averages around $55 million a year over the very long term.”

Article QQ.A.10bis, however, does provide that countries that are required to implement copyright term extension do not need to restore protection to subject matter that has fallen into the public domain in its territory as of the date of entry into force of the agreement. The extension will therefore apply only to those works that are still under protection as of the date the agreement enters into force for that country (which will depend on each country’s domestic process for approving the final agreement).

While the United States will not require changes to its domestic laws with respect to copyright term, it is unfortunate that this term is being imposed on other countries when it far exceeds international standards. Brunei, Canada, Japan, Malaysia, New Zealand and Vietnam will all be required to increase the copyright terms in their countries. Furthermore, it would be extremely difficult for the United States to revisit this term and reduce copyright term in the United States, even though evidence justifies and supports shorter terms, as the TPP would need to be re-negotiated with all TPP parties.

Conclusion

While there are still areas where the TPP should be criticized and several areas where the language of the TPP could have been better, the final text reveals significant improvements from the United States’ initial proposals. It is possible that some of these proposals resulted from stakeholder engagement, including criticisms of prior texts and proposals which was only made possible through leaks. These improvements and changes in the text over the course of the five years of negotiations reveal the importance of transparency in negotiations.

The TPP will still need to be approved by the domestic procedures set forth in each of the parties. In the United States, Congress will vote under the “fast track” procedures it set when it granted the President trade promotion authority. Congress will be able to approve or reject the agreement in a straight up-down vote, meaning that it cannot amend the agreement. Due to the timing set forth under fast track procedures, a vote in the United States will not occur until 2016. In Canada, a vote will not take place on the TPP until after it concludes its upcoming elections on October 19 and the new Parliament is in place.

Whether or not Congress approves the agreement, the final text of the TPP will likely provide the starting point for future negotiations. USTR has used past agreements, particularly the most recently concluded free trade agreements, as a template for future agreements. The gains made with respect to supporting a balanced copyright system should serve as a basis for additional improvements in the future.

In the Marya v. Warner/Chappel Music dispute over the copyright status of the song “Happy Birthday,” the District Court for the Central District of California found in its September 22, 2015 opinion that Warner does not hold a valid copyright over the lyrics.

The ruling went through the history of publication of the melody and lyrics to “Happy Birthday,” which uses the same melody and similar lyrics to a children’s song, “Good Morning,” written prior to 1893. The exact date of the lyrics to “Happy Birthday” were unclear, though references were made to the song since 1901. While the parties agreed that the melody entered the public domain long ago, they disagree on the status of the copyright of the lyrics to “Happy Birthday.”

The Plaintiffs in the case sought declaratory judgment, arguing the Defendants did not hold the valid copyright on several grounds: the lyrics were written by someone else, the common law copyright in the lyrics were lost due to general publication or abandonment, and that the rights were never transferred to the company Summy Co. In determining where the burden of proof lies, the district court relied on the Supreme Court’s 2014 decision in Medtronic, Inc. v. Mirowski Family Ventures which placed the burden of proof on the patent holder in the case. Thus, the district court noted “just as in Medtronic, there is no reason to relieve the alleged owners of the intellectual property of the usual burden of proof just because they are nominally the defendants in this declaratory judgment.”

The Defendants argued that evidence of registration entitled them to a presumption of validity. The district court rejected this argument because “Even assuming that the lyrics were printed in the deposit copy for E51990, it is unclear whether those lyrics were being registered, and therefore it is unclear with the Copyright Office determined the validity of Summy Co.’s alleged interest in the lyrics in 1935” because the registration covered a piano arrangement purportedly a derivative version of another melody. The registration did not make clear that the lyrics were being registered. The court also found that the question of who wrote the lyrics and whether the lyrics had been divested or abandoned were open ones that would require a trial.

The court did, however, find that a lawsuit between the purported authors (the Hill sisters) of the lyrics and Summy Co. in 1942 revealed evidence that the Hill sisters transferred only the melodies to Summy and did not transfer the lyrics. Both parties in the 1942 litigation described the transfer agreement as transferring the rights to “piano arrangements,” and the district court in the present case therefore found “it is not logical to infer that rights to ‘piano arrangements’ would include rights to any lyrics or words as well.” Thus, “Summy Co. never acquired the rights to the Happy Birthday lyrics, Defendants, as Summy Co.’s purported successors-in-interest do not own a valid copyright in the Happy Birthday lyrics.”

Ultimately, the court holds only that Warner does not hold a valid copyright in “Happy Birthday,” not necessarily that the work is in the public domain (a full trial or appeal could find the work to be in the public domain, given that the district court denied motions for summary judgment on the basis that there were other triable issues). While this ruling is certainly a cause for celebration because the song “Happy Birthday” is free from Warner’s licensing requirements, it also highlights a problem with the extensive copyright terms in the United States. It can be extremely difficult to determine who holds the copyright — or even if a valid one still exists — given the extremely long copyright terms that last for seventy years beyond the life of the author, or ninety-five years for corporate works. Copyright terms lasting well beyond the life of the author clearly exacerbates the orphan works problem.

The Library Copyright Alliance filed a response to the U.S. Copyright Office’s Notice of Inquiry on Copyright Protection for Certain Visual Works, focusing largely on the importance of fair use and the detrimental effects of the current lengthy copyright term in the United States.

The response opens by pointing out,

In the past, the difficulty of identifying or locating the owners of the copyrights in visual works was a significant challenge for libraries. Visual works are particularly susceptible to “orphaning” and often there is ambiguity in their copyright ownership. This orphan work problem had a chilling effect on libraries interested in important preservation and archival uses of visual works. It also impeded the use of collections of visual works for teaching and classroom use. Indeed, the orphan work challenge prompted LCA to strongly support enactment of the Shawn Bentley Orphan Works Act in 2008. However, significant changes int he copyright landscape since then convince us that libraries no longer need legislative reform in order to make appropriate uses of “orphaned” visual works in their collections.

The response then discusses the changed landscape, explaining that fair use is less uncertain today with a number of cases that have clarified the scope of this important doctrine. Additionally, codes of best practices have guided the use of digitization and making available of special collections and archives, including for orphan works.The fact that injunctions are less likely and mass digitization is more common also promote greater comfort in using orphan works.

The statement then notes that the orphan works problem is largely a result of the current copyright term in the United States that “is already unacceptably long, limiting access to visual works that should be in the public domain.” While not discussed in this response, it is worth noting that what is being called the last round of negotiations for the Trans-Pacific Partnership Agreement (TPP), a large regional trade agreement in the Asia-Pacific region that currently has twelve negotiating parties, copyright term will be an issue for discussion. Leaked text has revealed efforts by the United States to push for all parties to the TPP to adopt the lengthy term of life of the author plus 70 years, despite opposition to the imposition of copyright term extension.

During the March 2014 orphan works roundtables, the general view was that ECL was not a workable solution and there was a lack of interest in pursuing this approach. Despite the opposition to or wariness of ECL, the Copyright Office is nonetheless recommending ECL.

The report suggests that mass digitization cannot be accomplished with the exception of narrow circumstances. The report acknowledges that courts have concluded that mass digitization for full-text search and access for the print-disabled are protected by fair use, but argue that these cases “do not extend to the wider dissemination of copyrighted works without permission or compensation.”

The Copyright Office’s report also discusses voluntary stakeholder agreements, concluding that such arrangements would not protect users from infringement claims by copyright owners that are not part of the agreement.

The Copyright Office proposes a pilot ECL program, limited to specific categories of works. The report suggests “that ECL makes the most sense for the following works: (1) literary works; (2) pictorial or graphic works published as illustrations, diagrams, or similar adjuncts to literary works; and (3) photographs.” The proposed program would be limited to uses “undertaken for nonprofit educational or research purposes and without any purpose of direct or indirect commercial advantage.” While the proposal would allow a for-profit entity to use the program, “it would not be permitted to generate revenue from the collection by, for example, displaying advertisements or charging fees.” According to the proposal, Copyright Office would be tasked with approving collective management organizations (CMO) as part of the ECL. The approved CMO would represent all rights holders, except for those that affirmatively opt-out. The proposal suggests that the proposed Google Books settlement can provide an example of how license agreements can be structured.

In terms of royalty payments, the report states that, “while a CMO should be permitted to deduct fees from the license payments it collects, such deductions should be limited to amounts reasonably necessary to cover specified operational costs.” Where a CMO fails to locate a rights holder who is owed royalties within a specified time period, the CMO should transfer the funds to a trust account. If the funds in the trust account remain unclaimed after three years, the CMO could deduct a reasonable fee and then distribute the balance to educational or literacy based charities.

The Copyright Office’s report does suggest a fair use “savings clause providing that nothing in the statute is intended to affect the scope of fair use.”

Mass Digitization and Fair Use

Unfortunately, notwithstanding the inclusion of a fair use savings clause, the report seems to mischaracterize the importance of fair use in many mass digitization projects. The report asserts that the ECL proposal is intended for “activity for which there is broad agreement that no colorable fair use claim exists: providing digital access to copyrighted works in their entirety.” The Copyright Office continues:

To the extent it could be argued that any individual aspect of a mass digitization project might by itself qualify as fair use (e.g., the underlying digital copying), we would expect that view to be reflected in the overall license fee negotiated between the CMO and the user. That is,where the parties agree that a particular use would likely be deemed fair under established law, the portion of the license fee pertaining to that activity would likely be at or near zero (emphasis added).

This paragraph raises a number of concerns. First, it assumes that the parties must agree that a use is fair and implies that a user must first discuss and negotiate with the CMO. Fair use is a right and a user conducting activities that are fair uses need not engage in any prior discussions or negotiations with rights holders. While there may be circumstances in which a user wishes to first notify or discuss a particular use with the rights holder, he or she is not required to do so.

Furthermore, even with a fair use savings clause, parties may not agree that a use is fair use. In the Authors Guild v. HathiTrust litigation, the Authors Guild asserted that where HathiTrust’s activities went beyond the scope of what is permitted under Section 108, the Copyright Act’s specific exception for libraries and archives (which contains a fair use savings clause), they could not be considered fair use. While the Second Circuit dismissed this argument in a footnote to its opinion, other plaintiffs may try to make similar arguments.

Moreover, in situations where precedent strongly favors an understanding that a particular use would be considered a fair use , the rights holders might argue that the precedent is wrongly decided. Some rights holders argue that the fair use right has been applied too broadly by the courts. During the orphan works roundtables, one participant compared recent fair use case law to Plessy v. Ferguson, the 1892 Supreme Court case that upheld the “separate but equal” doctrine until being overturned by Brown v. Board of Education in 1954. Relatedly, during the orphan works roundtables, there were repeated suggestions that there were only two cases—HathiTrust and Google Books, both of which were on appeal at the time of the roundtables—that supported mass digitization and could be overturned. As Jonathan Band pointed out at the roundtable, however, various other Circuit Courts of Appeals cases also support mass digitization. He noted that HathiTrust and Google Books were based on earlier cases such as Kelly v. Arriba Soft, Perfect Ten v. Amazon and A.V. v. iParadigms.

Finally, rights holders may attempt to distinguish precedent on the basis of minor factual differences.

Special Collections

It appears that the Copyright Office is interested pursuing an ECL pilot program for the very types of collections that libraries already digitize and allow access to under fair use. The report notes, “The Office is particularly interested in stakeholder views regarding examples of mass digitization projects that may be appropriate for licensing under the proposed pilot. These comments may include (but need not be limited to) descriptions of particular collections of copyrighted works (e.g., Depression-era photographs) that prospective users may wish to digitize and make available through ECL.”

Digitizing a collection of Depression-era photographs seems to be a great example of what would likely be fair use. This example suggests a special collection of works that are primarily orphan works. It is unlikely that the rights holders for such works could be identified and located. These works are not likely to be exploited commercially and digitizing them and making them accessible online would therefore not harm the original market for the works. Digitization projects involving special collections often include enhancements that make the collection more useful, such as the inclusion of metadata.

The ARL Code of Best Practices in Fair Use for Academic and Research Libraries sets forth limitations and enhancements for a library’s fair use case in the context of digitizing special collections and making them electronically accessible:

PRINCIPLE:

It is fair use to create digital versions of a library’s special collections and archives and to make these versions electronically accessible in appropriate contexts.

LIMITATIONS:

Providing access to published works that are available in unused copies on the commercial market at reasonable prices should be undertaken only with careful considerations, if at all. To the extent that the copy of such a work in a particular collection is unique (e.g., contains marginalia or other unique markings or characteristics), access to unique aspects of the copy will be supportable under fair use. The presence of non-unique copies in a special collection can be indicated by descriptive entries without implicating copyright.

Where digitized special collections are posted online, reasonable steps should be taken to limit access to material likely to contain damaging or sensitive private information.

Full attribution, in a form satisfactory to scholars in the field, should be provided for all special collection items made available online, to the extent it is reasonably possible to do so.

ENHANCEMENTS:

The fair use case will be even stronger where items to be digitized consist largely of works, such as personal photographs, correspondence, or ephemera, whose owners are not exploiting the material commercially and likely could not be located to seek permission for new uses.

Libraries should consider taking technological steps, reasonable in light of both the nature of the material and of institutional capabilities, to prevent downloading of digital files by users, or else to limit the quality of files to what is appropriate to the use.

Libraries should also provide copyright owners with a simple tool for registering objections to online use, and respond to such objections promptly.

Subject to the considerations outlined above, a special collection should be digitized in its entirety, and presented as a cohesive collection whenever possible.

Adding criticism, commentary, rich metadata, and other additional value and context to the collection will strengthen the fair use case.

The fair use case will be stronger when the availability of the material is appropriately publicized to scholars in the field and other persons likely to be especially interested.

A number of libraries rely on fair use in the digitization of their special collections. For example, Duke University digitized a collection of historic TV commercials, called adViews. While Duke secured agreements from many of the rights holders of the commercials, it also relied on fair use because of the impossibility of identifying all rights holders of TV commercials. As is the case with many special collections, Duke enhanced its fair use position by adding additional videos to the collection featuring executives talking about TV advertising in the early 1960s as well as faculty members discussing the ways they used the materials in teaching.

Another great example is New York Public Library’s (NYPL) digitization of a collection of materials from the 1939 New York World’s Fair. The collection included records, documents, promotional photographs and other ephemera. As detailed by this Fair Use Weekguest blog post by Greg Cram, Associate Director of Copyright and Information Policy for New York Public Library, it was extremely difficult to determine whether the works were in copyright and a good-faith search for rights holders “was time-consuming and, ultimately, fruitless.” Relying, in part, on statements and codes of best practices, as well as views of academics, NYPL conducted a fair use analysis and decided to “move forward with digitization of portions of the collection after balancing the education benefit of the undertaking against the risk that a rights holder might subsequently surface” and posted selections online. NYPL created a free iPad application to feature the digitized content and this application was named one of Apple’s “Top Education Apps” of 2011.

These are just two of the many examples where mass digitization projects have relied on fair use. Special collections are a prime example where fair use may provide a strong basis for undertaking these projects. In both of the cases above, it does not appear that rights holders have contacted the institutions to complain or ask that they limit the uses of the digitized works.

In sum, the Copyright Office’s proposed ECL pilot program is inappropriate for special collections.

On June 4, 2015, the Copyright Office released its Report on Orphan Works and Mass Digitization, including recommendations for legislation on orphan works and the creation of an extended collective licensing (ECL) regime for mass digitization. This post focuses only on the Copyright Office’s recommendations on orphan works. This blog post is also available as an issue brief here.

Report on Orphan Works

The Copyright Office’s report asserts that “the orphan works problem is widespread and significant” and that “anyone using an orphan work does so under a legal cloud, as there is always the possibility that the copyright owner could emerge after the use commenced and seek substantial infringement damages, an injunction, and/or attorneys’ fees.” The report sets forth the problem of orphan works, noting:

The uncertainty surrounding the ownership status of orphan works does not serve the objectives of the copyright system. For good faith users, orphan works are a frustration, a liability risk, and a major cause of gridlock in the digital marketplace. The consequences of this uncertainty reverberate through all types of uses and users, all types and ages of works, and across all creative sectors. By electing to use a work without permission, users run the risk of an infringement suit resulting in litigation costs and possible damages. By foregoing use of these works, a significant part of the world’s cultural heritage embodied in copyright-protected works may not be exploited and may therefore fall into a so-called “20th-century digital black hole.”

The report acknowledges that fair use jurisprudence has moved in a direction that favors the use of orphan works, notably the HathiTrust and Google Books litigation. It notes that this evolution of fair use case law has prompted groups such as the Library Copyright Alliance, of which ARL is a member, to shift its position away from advocating a legislative solution to the orphan works problem. However, the Copyright Office rejects the idea that fair use can provide an adequate solution because:

The judiciary has yet to explicitly address how to apply fair use to orphan works. Thus, the informed and scholarly views of some commenters as to the application of fair use in specific orphan works situations do not yet have as their basis any controlling case law. Also, fair use jurisprudence is, because of its flexibility and fact-specific nature, a less concrete foundation for the beneficial use of orphan works than legislation, and is always subject to change . . . The Office does not believe that reliance on judicial trends, which may turn at any point, is a sufficient basis to forgo a permanent legislative solution.

The Copyright Office also rejects the role of best practices in an orphan works solution, criticizing the ARL Code of Best Practices as well as the Statement of Best Practices in Fair Use of Orphan Works for Libraries & Archives because they fail to “provide guidance on how a library should go about determining if a work is orphaned in the first place, beyond the lack of commercial exploitation by the owners and the likelihood that the owners could not be located.” Additionally, the report criticizes fair use best practices because they “often are arrived at absent consultation with authors and other copyright owners, and therefore run the risk of being more of an aspirational document—what a community believes fair use ought to be – than a descriptive one.”

Rejecting fair use as a solution, as well as other models such as a government license, the Copyright Office proposes a model that provides for limitations on liability.

Discussion Draft for Legislation

The discussion draft for legislation on orphan works is largely based off the Shawn Bentley Orphan Works Act of 2008, which was passed by the Senate, but failed in the House of Representatives.

Limitations on Remedies

The Copyright Office’s draft legislation would limit remedies to reasonable compensation, defined as the amount a willing buyer and willing seller in the position of the user and the rightholder would have agreed to immediately before the infringement began, for eligible users who can establish that they engaged in a good faith diligent search.

The order to pay reasonable compensation does not apply to nonprofit educational institutions, museums, libraries, archives or public broadcasting entities where 1) the infringement was performed without any purpose of direct or indirect commercial advantage; 2) the infringement was primarily education, religious or charitable in nature; and 3) the infringer ceases to use the work after receiving notice of the claim of infringement and having opportunity to conduct a good faith investigation of the claim.

Injunctions may be granted, subject to an exception where the use is recast, transformed, adapted or integrated into a work “with a significant amount of original expression” and the infringer pays reasonable compensation and provide attribution. This limitation on injunctions does not apply, however, where the owner is the author of the work objects, alleging that the new use “would be prejudicial to the owner’s honor or reputation, and this harm is not otherwise compensable.” This restriction on the limitation on injunctions is new; it was not present in the 2008 Shawn Bentley Act.

Good Faith Diligent Search

A good faith diligent search requires, at a minimum, a search of the Copyright Office records, searching sources of copyright authorship, ownership and licensing information, the use of technology tools, printed publications and “where reasonable, internal or external expert assistance,” and the use of databases, including the Internet. In addition, a good faith diligent search “shall include any actions that are reasonable and appropriate under the facts relevant to the search, including actions based on facts known at the start of the search and facts uncovered during the search, and including a review, as appropriate, of Copyright Office records not available to the public through the Internet that are reasonably likely to be useful in identifying and locating the copyright owner.”

The legislation provides that the Copyright Office will maintain and update “statements of recommended practices” for diligent searches for categories of works. These statements “will ordinarily include reference to materials, resources, databases, and technology tools that are relevant to a search” and may consider comments submitted by interested stakeholders.

The requirements for a good faith diligent search set minimum standards that are highly detailed and burdensome. In addition to the minimum standards for a diligent search, users are required to take “any actions that are reasonable and appropriate” that may include review of Copyright Office records that are not available over the Internet, resulting in extremely time consuming and resource intensive searches.

Notice of Use Requirement

This discussion draft also includes a “Notice of Use” requirement, directing users to submit detailed information to the Copyright Office about the intended use and the nature of the search. The “notice of use” must include the following information: 1) type of work used; 2) description of the work; 3) summary of the qualifying search conducted; 4) any other identifying indicia available to the user; 5) source of the work (such as the library or website where the work was located or publication where the work originally appeared); 6) certification that the user performed a qualifying search; and 7) name of the user and description of how the work will be used.

The version of the Shawn Bentley Act passed by the Senate in 2008 did not contain a Notice of Use Provision. When the bill went over to the House, Congressman Howard Berman, then chairman of the House IP Subcommittee, added a notice of use provision as a “poison pill.” Berman was highly skeptical of the need for legislation, so he added the notice of use requirement because he knew it would be strongly opposed by the bills’ proponents, including the libraries and the publishers. The tactic succeeded, and the bill died in the House.

The notice of use is a burdensome requirement that will require time and resources and could significantly undermine the usefulness of the legislation. The high level of detail and documentation required is unworkable, particularly for large volumes of uses. In addition, the Copyright Office does not have the technological infrastructure nor the staff to undertake the effort proposed.

Fair Use Savings Clause

The discussion draft includes a fair use savings clause:

PRESERVATION OF OTHER RIGHTS, LIMITATIONS, AND DEFENSES— This section does not affect any right or any limitation or defense to copyright infringement, including fair use, under this title. If another provision of this title provides for a statutory license that would permit the use contemplated by the infringer, that provision applies instead of this section.

This savings clause is critical in providing assurances that users of orphan works may still rely on fair use. As was pointed out by the Library Copyright Alliance (LCA), individual libraries, and other commentators, fair use jurisprudence has moved in a positive direction. Court cases that have been decided in recent years have strongly favored fair use, particularly in transformative use cases.

Analysis

The Copyright Office’s denigration of fair use as a solution to the orphan works problem is disappointing. What the Copyright Office fails to acknowledge in its analysis of recent fair use jurisprudence is that fair use is a fairly predictable doctrine. As Professor Pamela Samuelson noted in a 2009 article entitled, Unbundling Fair Uses, “Fair use is both more coherent and more predictable than many commentators have perceived once one recognizes that fair use cases fall into common patterns.” The Copyright Office’s suggestion that because fair use is flexible and fact-specific it is insufficient to address orphan works, is also misleading. By analogy, while the Copyright law does not have an explicit limitation or exception for the use of VCRs or DVRs, specific legislation to ensure that recording using such devices is lawful is not necessary because it is widely understood that such activity is fair use.

Furthermore, the Copyright Office suggests that even where fair use may be a defense, “many will choose to forego use of the work entirely rather than risk the prospect of expensive litigation.” The Copyright Office fails to recognize that its proposed burdensome legislation that requires extremely time and resource intensive searches as well as notice of use requirements, could also cause users to forego the use of the work. Additionally, where legislation appears overly complicated, while institutions and corporations may make use of it, individual users may find compliance difficult. The TEACH Act is one such example. The difficult and burdensome requirements of the TEACH Act have led to few, if any institutions from using it.

With respect to community best practices, it is true that they are made without consultation with rightholders, but this is a conscious decision. Community best practices “arise from the community’s values and mission. It presents a clear and conscientious articulation of the values of that community, not a compromise between those values and the competing interests of other parties.” Best practices that have been negotiated with rightholders would likely fall far short of what the law actually permits under fair use. Indeed, an effort to develop guidelines in the late 1990’s under the auspices of the USPTO failed to produce any guidance to the various communities of interest after several years of effort. Furthermore, these best practice documents are grounded in community practices, often supported by case law, not merely aspirational documents.

As noted above, the draft legislation has significant problems including overly burdensome and complicated requirements. The requirements for a reasonably diligent search and limitations on injunctions are highly problematic. Finally, the notice of use provision is as poisonous now as it was in 2008. If it is included in an orphan works provision, it will ensure that the provision is rarely, if ever, used.

The Center for Media & Social Impact (CMSi) recently released its Statement of Best Practices in Fair Use of Collections Containing Orphan Works for Libraries, Archives, and Other Memory Institutions. This best practices document addresses fair use in collections that appear to contain a significant number of orphan works—works where it is difficult or impossible to identify or locate the rightsholder—focusing on digital preservation of and access to these collections. In reading the Orphan Works Best Practices, it is important to keep in mind that the document addresses collections that are likely to contain a significant volume of orphan works rather than necessarily about orphan works themselves.

The Orphan Works Best Practices can complement ARL’s Code of Best Practices in Fair Use for Academic and Research Libraries. The ARL Code of Best Practices focuses on fair use where the use is transformative, essentially justifying fair use with regard to particular uses. It does not focus on whether a work is an orphan or not; the orphan work status may enhance the case for fair use under some circumstances as noted in the document. The Orphan Works Best Practices, while noting in its introduction and description of fair use that the use of collections with orphan works is often transformative, the recommendations tend to focuses on fair use regarding preservation and access to collections containing orphan works, focusing less on the transformativeness of the use. Despite these differences, there are some areas of overlap between the documents.

The Orphan Works Best Practices notes in its first principle:

Fair use supports the digital preservation of materials in archival and special collections, without regard to their status as orphan works.

This principle is similar to the third principle of the ARL Code of Best Practices, which provides:

It is fair use to make digital copies of collection items that are likely to deteriorate, or that exist only in difficult-to-access formats, for purposes of preservation, and to make those copies available as surrogates for fragile or otherwise inaccessible materials.

The ARL Code of Best Practices also includes several limitations and enhancements to strengthen the case for fair use in preservation.

With respect to access, the Orphan Works Best Practices states:

Fair use supports professionals’ efforts to provide on-premises and online public access to archival and special collections that can reasonably be expected to contain significant numbers of orphan works, including collections that include other copyrighted materials. [. . .]

It then notes that this general principle should be applied together with best practices related to issues of acquisition, clearances, selective exclusions from access, curation, conditions on availability, dialogue with the public, and providing copies to members of the public.

On the issue of seeking permissions before providing access to digital collections of special and archival collection materials, the Orphan Works Best Practices recommends seeking permissions under certain special cases:

Memory institution professionals strongly believed that seeking permissions to provide access to materials was desirable in some particular cases. As a matter of legal doctrine, a fair user never is required to obtain a rightholder’s prior consent, but under some circumstances seeking such consent may be advisable to document the absence of market harm. Indeed, in order to sustain the strength of memory institutions’ fair use claims generally, many professionals believed it was desirable in certain special cases to seek permission before providing digital access. They believed that in particular instances they should refer to the best professional judgment of the community, reflected in the best practices below, to determine whether clearances should be sought. In the event that the institution decides to seek permissions, they can wisely use the Society of American Archivists’ 2009 “Orphan Works: Statement of Best Practices” as a guide to ways and means of doing so.

Seeking permissions for use: Make attempts to secure copyright clearance in certain situations where this is reasonable, especially those characterized by the significant presence in the collection of the following types of works:

Significant clusters of items traceable to a known or easily identifiable copyright owner (or groups of related owners);

Significant clusters where contacting rights owners can be automated;

Individual items representing works that have readily identifiable and significant market value, including material related to high-profile individuals;

A predominance in the collection of materials created within 25 years.

It is important to note that the Orphan Works Best Practices document does not suggest that clearances be sought in all circumstances or even most. The document repeatedly notes that it may be advisable in “certain special cases” or “particular instances” or “particular cases.” While seeking permissions for an orphan work itself is obviously difficult since the rightsholder may be difficult or impossible to locate, this section seems to address circumstances where a collection may have a large number of orphan works, but also a large number of works where the rightsholder is traceable.

The ARL Code of Best Practices overlaps in some ways with this portion of the Orphan Works Best Practices. The ARL Code addresses the creation of and access to digital collections, stating (in relevant part) that:

PRINCIPLE:

It is fair use to create digital versions of a library’s special collections and archives and to make these versions electronically accessible in appropriate contexts.

LIMITATIONS:

Providing access to published works that are available in unused copies on the commercial market at reasonable prices should be undertaken only with careful consideration, if at all. To the extent that the copy of such a work in a particular collection is unique (e.g., contains marginalia or other unique markings or characteristics), access to unique aspects of the copy will be supportable under fair use. The presence of non-unique copies in a special collection can be indicated by descriptive entries without implicating copyright.

[. . .]

ENHANCEMENTS:

The fair use case will be even stronger where items to be digitized consist largely of works, such as personal photographs, correspondence, or ephemera, whose owners are not exploiting the material commercially and likely could not be located to seek permission for new uses.

[. . .]

The ARL Code of Best Practices supports providing access to digital versions of special and archival collections “in appropriate circumstances.” Where the collections include works likely to be orphan works, the case for fair use is enhanced. The ARL Code also provides a limitation that cautions against providing access to works that are available on the commercial market at a reasonable price. The ARL Code of Best Practices does not address seeking permissions, but the recommendation in the Orphan Works Best Practices to seek clearances were significant clusters of items are traceable to a known rightsholder may be appropriate where, for example, these works are available on the commercial market.

Of course, where the use is sufficiently transformative and is a fair use, even where a rightsholder may be readily traceable permissions need not be sought. Fair use is a right and permission from the rightsholder is unnecessary. Librarians must determine in each unique circumstance whether the use meets the standards of fair use and whether foregoing clearances is appropriate.

While both the Orphan Works Best Practices and ARL Code of Best Practices serve as important guidance, fair use decisions must be determined on a case-by-case basis. Thus, while the Orphan Works Best Practices may recommend that professionals seek permissions to provide access under some circumstances, at the end of the day memory institution professionals are the ones who must ultimately make the decision as to whether a use is fair and whether permissions should be sought.

On Tuesday, November 25, the Association of Research Libraries (ARL), along with the American Library Association, Association of College and Research Libraries, and other technology and free speech organizations, joined an amicus brief authored by the Electronic Frontier Foundation in Garcia v. Google after the Ninth Circuit agreed to rehear the case en banc.

Earlier this year, a Ninth Circuit panel ruled 2-1 in favor of Cindy Lee Garcia, an actor in the film Innocence of Muslims, who asserted a separate copyright interest in her performance after being tricked into appearing in a five-second clip of the film and subsequently sought takedown of the film from YouTube. While the district court refused to order takedown, the Ninth Circuit reversed, ordering Google, which owns YouTube, to take down — and keep down — the video.

The amicus brief argues that copyright law disfavors Garcia’s claim, that requiring service providers to monitor “blacklisted” content sets a dangerous precedent for online speech, and that finding a separate copyright interest for Garcia’s five second appearance would harm the expectations of content owners and increase the number of orphan works.

On Friday, May 16, 2014, the Library Copyright Alliance submitted additional comments on orphan works and mass digitization in response to the Copyright Office’s notice of inquiry. These comments address the discussions from the March 10-11, 2014 public meeting on orphan works and mass digitzation noting the complete lack of consensus on these issues, the concerns regarding extended collective licensing solutions, and the appropriateness of best practices developed by user communities. The first day’s transcript of the public meeting is available here and the second day’s transcript is available here.

No Consensus on Orphan Works Legislation

In response to the Copyright Office’s request for comments in 2013, LCA noted that the opinions submitted represented diverse and wide-ranging opinions, suggesting that it would be extremely difficult to find consensus on these issues. The public meeting highlighted the continued diversity of opinion and “the divisions between different communities may be even deeper now than before.” The additional comments filed by LCA summarize the comments and divisions made during the panels.

LCA’s additional comments point out that there was hostility during the public meeting which, “exposed a basic divergence concerning the correctness of fair use decisions over the past decade. Indeed, one rights holder representative compared the recent fair use case law to Plessy v. Ferguson, suggesting that these fair use holdings were as legally and morally flawed as the Supreme Court’s 1892 ruling upholding the ‘separate but equal’ doctrine. The inflammatory nature of this analogy was exceeded only by another rights holder representative threatening three times during the course of one panel to sue libraries …”

Extended Collective Licensing

The LCA comments note that unlike the other topics discussed, the discussion regarding extended collective licensing (ECL) seemed to be in agreement that ECL would not be an effective solution to issues relating to mass digitization. The comments submitted by LCA summarize the discussions from the public meeting, which highlighted the problems of collecting societies. Additionally, the LCA statement points to comments made with respect to the value-add of mass digitization projects undertaken by libraries and benefits mass digitization has provided for persons who are blind or print disabled.

Best Practices

LCA’s additional comments also cover statements made regarding best practices at the public meeting, pointing out that “representatives of libraries, archives and documentary filmmakers noted that the best practices developed by their communities provided useful guidance concerning the application of fair use to activities relating to orphan works and mass digitization.”

The comments also address the arguments by right holders that these best practices do not have validity because they were not developed in consultation with right holders. LCA notes that “To the contrary, codes of fair use best practices developed by specific communities do have legal significance” and that community use may help judges make fair use determinations. Furthermore, the comments point out that the best practices “are not intended to be negotiated compromises that take the place of legislation. Rather, they are intended to be expressions of norms and customs relating to specific uses in specific communities.” Additionally, negotiations around best practices on these issues with rightholders are likely to be futile.

LCA’s comments highlight ARL’s Code of Best Practices in Fair Use for Academic and Research Libraries which provide nuanced fair use guidance for libraries in a variety of circumstances, including situations relating to orphan works and mass digitization. These situations include, for example, addressing preservation of at-risk items; creating digital collections of archival and special collection materials; creating databases to facilitate non-consumptive research uses; and collecting material posted on the World Wide Web and making it available.

On Wednesday, April 2, 2014, the House Committee on the Judiciary, Subcommittee on Courts, Intellectual Property and the Internet continued its copyright review. This hearing focused on “Preservation and Reuse of Copyrighted Works” with six panelists: Mr. Gregory Lukow (Chief, Packard Campus for Audio Visual Conservation, Library of Congress); Mr. Richard Rudick (Co-Chair, Section 108 Study Group); Mr. James Neal (Vice President for Information Services and University Librarian, Columbia University); Ms. Jan Constantine (General Counsel, The Authors Guild); Mr. Michael C. Donaldson (Partner, Donaldson + Callif, LLP, on behalf of Film Independent and International Documentary Association); and Mr. Jeffry Sedlik (President and Chief Executive Officer, PLUS Coalition). Written testimony from each witness is available here.

Neal’s statement, endorsed by the Library Copyright Alliance (LCA), provides that the “overarching point is that the existing statutory framework, which combines the specific library exceptions in Section 108 with the flexible fair use right, works well for libraries, and does not require amendment.” In reaching this point, the written statement goes through four issues: 1) the importance of library preservation; 2) how the library exceptions under Section 108 supplement rather than supplant fair use; 3) the diminished need for orphan works legislation; and 4) perspective on the HathiTrust case.

Library Preservation

The written testimony emphasize that providing access to collections of preserved materials is a critical part of libraries’ missions. It notes that with the digital age and new technology, new challenges for preservation have emerged to ensure that new media, which represent a substantial part of the cultural record, are adequately preserved. Neal’s statement gives several examples from his experience at Columbia emphasizing the need to format shift and preserve materials in different formats, including content that existed on short-lived websites. The statement further notes that in order to achieve this mission, libraries “require robust applications of flexible exceptions such as fair use so that copyright technicalities do not interfere with their preservation mission.”

Relationship Between Section 108 and Fair Use

The statement points to the privileged status of libraries throughout the Copyright Act, with seven specific examples. For example, the statement notes that Section 504(c)(2) shields libraries from statutory damages where the library reasonably believed their activity constituted fair use. Section 12014(b) excludes libraries from criminal liability under the DMCA. And, of course, Section 108 provides libraries and archives with a clear set of exceptions for certain activities.

The written testimony emphasizes that Section 108 does not represent the totality of exceptions and limitations from which libraries may benefit, as the Authors Guild initially argued in HathiTrust, and that fair use, amongst other exceptions, may also be relied upon. Without being able to rely on fair use and other exceptions that exist in other sections of the Copyright Act, libraries, including the Library of Congress, would be considered serial infringers. Further, Section 108(f)(4) clearly and unambiguously provides that nothing in Section 108 “in any way affects the right of fair use” and the legislative history supports the meaning of the plain language of the statute. Scholars and case law similarly support this clear reading of the interplay between Section 108 and Section 107.

Furthermore, fair use sufficiently updates Section 108 and it is therefore unnecessary to make legislative changes to Section 108. Neal notes that, as a member of the Section 108 study group, a report was issued after three contentious years, reflected only a high level agreement, and did not resolve many important issues because of the lack of agreement. The statement highlights a concern that some of the Study Group’s recommendation could limit what libraries do today. This section of the statement concludes, “The fact that Section 108 may reflect a pre-digital environment does not mean it is obsolete. It provides libraries and archives with important certainty with respect to the activities it covers. Furthermore, Section 108 provides courts with importance guidance concerning the application of Section 107.”

Orphan Works

The statement also notes that from Neal’s perspective and of LCA’s, orphan works legislation is no longer necessary because the “gatekeeper” problem has diminished due to greater certainty regarding fair use, including recent jurisprudence in this area in a wide range of cases. Furthermore, the Code of Best Practices has provided reassurances with respect to orphan works in a special collection as well as digitizing and making available materials in special collections. In addition to fair use developments, there is less likelihood that injunctions will be issued since the Supreme Court’s 2007 ruling in eBay v. MercExchange which changed the presumptions regarding injunctions in cases of infringement. Furthermore, mass digitization has become more common. In addition to these developments, the clear disagreement over an orphan works solution suggests that a legislative solution regarding orphan works, mass digitization or Section 108 will be very difficult if not impossible.

HathiTrust

The fourth section of the statement explains the HathiTrust project and discusses the litigation initiated by The Authors Guild. The statement goes into Judge Baer’s district court decision in detail and expresses the “hope that the Second Circuit will agree with Judge Baer that HDL (HathiTrust Digital Library) preserves important works, allows them to be searched, and provides access to the print disabled, without causing any economic harm to rights holders.

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Unless otherwise noted, posts after January 10, 2014 are written by Krista L. Cox, Director of Public Policy Initiatives at ARL. Some of the content here will not be written or created by ARL, but rather will be collected from elsewhere on the web. Quotation does NOT imply endorsement!

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02/19/2019 at 3:09pmI first saw this discussed on Twitter, now WaPo has an article on Justice Thomas' concurrence in a denial of cert, but that urges reexamining the 1st & 14th Amendments in libel cases (i.e. a reexamining of NYT v Sullivan) https://t.co/lCwY85MEO0